News & Analysis as of

Patents Discovery Patent Litigation

Knobbe Martens

Inaction Can Lead To Argument Forfeiture on Appeal

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ALIVECOR, INC. v. APPLE INC. Before Hughes, Linn, and Stark. Appeal from Patent Trial and Appeal Board - A party in a PTAB proceeding forfeits the ability to challenge an opposing party’s discovery obligation violation...more

A&O Shearman

Poster Presentation Tied To Business Objectives Serves As Evidence Of Infringement Of Patented Methods

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On February 12, 2025, the United States District Court for the District of Delaware denied defendant Parse Biosciences’s (“Parse”) motions for summary judgment that: (i) Parse had never actually conducted any direct or...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Case: Kroy IP Holdings, LLC v. Groupon Inc.

After an inter partes review finds certain claims of a patent unpatentable, may the patentee assert other claims, immaterially different, in district court without being collaterally estopped? This was the question presented...more

McDermott Will & Emery

Judicial Bias and Erroneous Admission of Expert Testimony Prompt Case Reassignment

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The US Court of Appeals for the Federal Circuit reversed a district court’s decision to admit expert testimony and remanded the case to a different judge, noting that “from the moment this case fell in his lap, the trial...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: Trudell Medical International Inc. v. D R Burton Healthcare, LLC

Trudell Medical International Inc. v. D R Burton Healthcare, LLC, Appeal Nos. 2023-1777, -1779 (Fed. Cir. Feb. 7, 2025) This week’s Case of the Week presents a cautionary tale for litigators to be sure they’ve timely...more

Goodwin

HyClone Seeks to Quash Amgen’s Subpoena Issued in Denosumab BPCIA Litigation Against Fresenius

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On February 4, 2025, HyClone Laboratories, LLC (“HyClone”), a cell culture media supplier, filed a Motion to Quash a subpoena issued by Amgen, Inc. (“Amgen”). The underlying subpoena was issued in Amgen’s ongoing denosumab...more

Fish & Richardson

Texas Round-Up: December 2024

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Three subjects stood out in patent litigation in Texas in December 2024: (1) knowledge of related patents, general patent portfolio, or other asserted patents do not establish the knowledge requirement for pre-suit indirect...more

Patterson Belknap Webb & Tyler LLP

There’s an Exception to Every Rule: Judge Schofield Finds a Comparison of the Plaintiff’s Patented System and the Accused System...

In a recently published opinion, Judge Lorna G. Schofield (S.D.N.Y.) found that it was appropriate to compare the accused system to a plaintiff’s commercial system embodying the asserted patent claims, rather than the patent...more

Kilpatrick

5 Key Takeaways | Building a Winning Evidentiary Record at the PTAB (and Surviving Appeal)

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Kilpatrick partners John Alemanni and Justin Krieger recently presented a CLE addressing “Building a Winning Evidentiary Record at the PTAB (and Surviving Appeal).”...more

Patterson Belknap Webb & Tyler LLP

You Can Go In-House, But You Can’t Hide: In-House Counsel Not Immune from Deposition

On November 13, 2024, United States Magistrate Judge Victoria Reznik (S.D.N.Y.) granted-in-part and denied-in-part DJ Plaintiff Carvana, LLC’s (“Carvana”) motion for a Protective Order to preclude Defendant IBM from deposing...more

Proskauer Rose LLP

Ventures in Venue: Selecting the Proper Patent Venue

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Amongst the many decisions an attorney makes throughout litigation, there is one choice that can shape the outcome of a case way before filing a motion, setting discovery and trial strategy, or even calling a witness: venue,...more

Jones Day

Don’t Wait To Seek Discovery Or It May Be Too Late

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“The statutory provisions for inter partes reviews, post-grant reviews, and covered-business method patent reviews caution against overly broad discovery and provide the same considerations, including efficient administration...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Denies Motion to Compel Discovery of Evidence from Parallel ITC Investigation Due to Lack of Inconsistency

The PTAB denied a petitioner’s motion to compel routine discovery that sought information from a parallel ITC investigation for alleged inconsistent positions taken by patent owner in the IPR. The board found that patent...more

Baker Botts L.L.P.

Third Quarter 2024 Federal Circuit Law Update

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Since serving as a Federal Circuit clerk, Michael Hawes has monitored that court's precedential opinions and prepares a deeply outlined index by subject matter (invalidity, infringement, claim construction, etc.) of relevant...more

Patterson Belknap Webb & Tyler LLP

Show Me the Papers!: Judge Aaron Grants Motion to Compel Document Discovery from Third-Party

United States Magistrate Judge Stewart D. Aaron (S.D.N.Y.) recently granted a motion by Samsung Electronics Co. Ltd and Samsung Electronics America, Inc. (collectively “Samsung”) to compel non-party Microchip Technology...more

Patterson Belknap Webb & Tyler LLP

Time May Not Be on Your Side: Judge Ho Allows the Addition of New Parties Discovered During Stay

Defendants in patent cases should be wary of the possibility that a plaintiff will attempt to add new defendants after a stay for inter partes review is lifted. In a pending case involving patents directed to “space...more

Axinn, Veltrop & Harkrider LLP

Patent Damages Procedural Fails Keep Coming

Last month I checked in on a discovery dispute regarding the timeliness of disclosing noninfringing alternatives (NIAs) in a case with only two rounds of expert reports. I noted that the problem (defendant waiting until the...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - April 2024

Harris Brumfield v. IBG LLC, Appeal No. 2022-1630 (Fed. Cir. Mar. 27, 2024) In our case of the week, the Federal Circuit addressed three issues in a dispute that dates back to 2010, and has been to the Court on three...more

Kilpatrick

5 Key Takeaways - Mitigating the Costs and Risks of Source Code and Email Discovery

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Kilpatrick’s Dean Powell and Kim Byrd recently presented “Mitigating the Costs and Risks of Source Code and Email Discovery” at the firm’s annual 2024 Advanced Patent Law Seminar. This full-day seminar featured discussions on...more

Axinn, Veltrop & Harkrider LLP

Contentions & Expert Reports: A Match Made in [Someplace]

The interplay between contentions and expert reports in a patent case always requires considered judgment. The common sense rule that an expert may “expand on” but not “deviate from” a party's contentions is easy to say but...more

Axinn, Veltrop & Harkrider LLP

When Disclosure Isn't Disclosure

A patent challenger identified a witness as a person with relevant knowledge in Rule 26(a) disclosures and interrogatory responses, and the patentee deposed the witness. Surely the witness can testify at trial, right? The...more

Akin Gump Strauss Hauer & Feld LLP

Defendant’s Non-Party Status to IPRs Dooms Stay Request, Despite Agreement to Be Bound by IPR Estoppel

The Western District of Texas recently denied a defendant’s motion to stay pending inter partes review based in part on the defendant’s status as a non-party in the IPR proceedings. In doing so, the district court focused on...more

Haug Partners LLP

A U.S. View on the UPC – Part 7: “Discovery”

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On June 1, 2023, the new European Unified Patent Court (UPC) opened its doors, and enforcement of European patents in (currently) 17 contract member states is now possible with one action. This series of articles – directed...more

Jones Day

PTAB Denies Discovery of Draft Declaration

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On November 18, 2022, a panel of three PTAB administrative patent judges denied a Patent Owner’s Request for Additional Discovery in Twitter, Inc. v. Palo Alto Research Center Inc., IPR2021-01398. The PTAB found that...more

WilmerHale

Federal Circuit Patent Watch: Federal Circuit Affirms Decision to Impose Discovery Sanctions Against Defendant for Late Disclosure...

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Precedential Federal Circuit Opinions - 1.  ADASA INC. v. AVERY DENNISON CORPORATION [OPINION] (2022-1092, 12/16/2022) (Moore, Hughes, and Stark) - Moore, C.J. The Court affirmed in part, vacated in part, and remanded...more

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